Chapter §11.04 Patent Issuance

• Jurisdiction: United States

§11.04 Patent Issuance

Whenever during the examination process the USPTO examiner determines that the applicant is entitled to a patent on some or all of the claims, he will send the applicant a Notice of Allowance so indicating.¹³⁵ The applicant must then (within three months) pay an issue fee to obtain a patent encompassing the allowed claims.¹³⁶ The USPTO will issue the patent within about three months after the applicant has paid the issue fee.¹³⁷ The issue date represents the first date on or after which the patent owner can enforce the patent in U.S. federal court by suing alleged infringers.¹³⁸

The default rule is that the USPTO will grant the patent to the inventor of record. However, if the inventor has assigned her rights to another and timely notified the USPTO, the Office will grant the patent to the assignee. The statute provides that "[p]atents may be granted to the assignee of the inventor of record in the Patent and Trademark Office, upon the application made and the specification sworn to by the inventor, except as otherwise provided in this title."¹³⁹ Patents are issued under the seal of the USPTO, bear the signature of the Director of the USPTO, and are recorded in the USPTO.¹⁴⁰

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Notes:

^[135] See 35 U.S.C. §151 (2006) ("Issue of Patent") (providing in part that "[i]f it appears that applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee or a portion thereof, which shall be paid within three months thereafter. Upon payment of this sum the patent shall issue, but if payment is not timely made, the application shall be regarded as abandoned.").

^[136] See 35 U.S.C. §151 (2006).

^[137] See Mark Montague et al., Examination Before the USPTO, In Advising High-Technology Companies §3:5.1 [F] (Nathaniel T. Trelease ed., PLI 2004); See also 37 C.F.R. §1.314 ("Issuance of Patent") (providing that "[i]f applicant timely pays the issue fee, the Office will issue the patent in regular course unless the application is withdrawn from issue ([37 C.F.R.] §1.313) or the Office defers issuance of the patent."); 37 C.F.R. §1.315 ("Delivery of Patent") (providing in part that "[t]he patent will be delivered or mailed upon issuance to the correspondence address of record.").

^[138] See 35 U.S.C. §154(a)(2) (providing that "such grant [of the right to exclude others] shall be for a term beginning on the date on...